District Court Erred in its Inherent Anticipation Analysis
January 20, 2004
Last Month at the Federal Circuit - February 2004
Judges: Michel (author), Lourie, and Linn
In Toro Co. v. Deere & Co., No. 03- 1160 (Fed. Cir. Jan. 20, 2004), the Federal Circuit vacated the district court’s holding and stipulated final judgment of validity regarding U.S. Patent No. 5,207,168 (“the ‘168 patent”); affirmed the district court’s denial of SJ of invalidity for anticipation and its grant of SJ of infringement of the ‘168 patent; affirmed the district court’s SJ of noninfringement of U.S. Patent Nos. 5,199,744 (“the ‘744 patent”) and 5,101,745 (“the ‘745 patent”); and remanded the case for further proceedings on claim construction, anticipation, and other invalidity defenses regarding the ‘168 patent.
The three patents-in-suit, which share a common written description, relate to technology for lifting and fracturing soil to decrease subsurface soil density and thereby encourage turf growth. The technology involves using an apparatus with a row of adjacent nozzles that sporadically shoot concentrated jets of pressurized liquid into the turf and topsoil. Toro Company (“Toro”) sued Deere & Company (“Deere”) for infringement based on Deere’s RZI 700 machine. Deere countered with various defenses, including that the ‘168 patent was invalid as anticipated by U.S. Patent No. 4,907,516 (“the ‘516 patent”) to Ramon Rogers, the eventual designer of Deere’s RZI 700 machine.
Claim 1 of the ‘168 patent recites a turf-treating method comprising three steps. On appeal, Toro argued that the ‘516 patent expressly disclosed two of the three steps and inherently disclosed the third step: “moving said source of incompressible liquid over the surface of said turf in a pattern such that the lateral dispersion from adjacent jets coact with another to lift and fracture the soil and reduce the general soil density.”
The Federal Circuit ruled that the district court had erred in failing to construe this limitation. This lack of claim construction left unclear the precise scope of the limitation and made it impossible to know exactly what the prior art ‘516 patent must disclose if it were to inherently anticipate. Accordingly, the Federal Circuit remanded to the district court for further claim construction.
The Federal Circuit also disagreed with the district court’s statement of the law governing inherent anticipation and, citing its recent decision in Schering Corp. v. Geneva Pharmaceuticals, Inc., 339 F.3d 1373 (Fed. Cir. 2003), reiterated that the fact that a characteristic is a necessary feature or result of a prior art embodiment suffices for anticipation, even if that fact was unknown at the time of the prior invention. The Court went on to hold that, to properly show inherent anticipation, the prior art reference must have sufficiently described and enabled at least one embodiment that necessarily featured or resulted in the subject matter at issue, but neither description nor contemporaneous recognition of these necessary features or results was required. Accordingly, the Federal Circuit affirmed the district court’s denial of SJ of invalidity based on anticipation, but vacated the court’s holding that the ‘168 patent was valid and remanded for further analysis of anticipation in accordance with its opinion.
Turning to the ‘744 and ‘745 patents, the Federal Circuit agreed with the district court’s interpretation that claim 1 of both the ‘744 and ‘745 patents recites meansplus- function language and, thus, triggers § 112, ¶ 6 analysis. However, it disagreed with the district court’s finding that claim 17 of the ‘744 patent is not written in means-plus-function format. Instead, the Federal Circuit found that claim 17 was subject to § 112, ¶ 6 and, therefore, limited to a structure that includes a mechanical cam system as disclosed and its equivalents. Deere used an electrically controlled solenoid system to periodically release pressurized liquid. The Court compared this structure to Toro’s mechanical cam system and concluded that the electrically controlled solenoid system performs the claimed function in a substantially different way than the mechanical cam system. Accordingly, the Court affirmed the district court’s grant of SJ of noninfringement of the ‘744 and ‘745 patents.